Patent FAQ

Unless otherwise specified, all question and answers relate to Canadian patents.

General Questions

What is a patent?
Patents are a type of property protection applying to new inventions. Similar to how property rights in land give an owner the right to prevent the use of that land by others, property rights in a patent give an owner the right to prevent the use of a claimed invention by others. They can be seen as a reward and incentive for ingenuity.

What rights does a patent provide?A patent provides a time-limited, legally protected right to prevent others from making, using and selling an invention.

How can patents enhance the commercial value of ideas?A patent can allow you to create and enforce a limited monopoly; preventing competitors from making, using, or selling your claimed invention. Patents can also be bought and sold, providing you with a transferable property right.

What are the differences between patents, industrial designs, trademarks, and copyrights?Patents are used to protect new and useful inventions, including software processes, manufacturing and production processes, devices, and products. Industrial designs, known as design patents in the United States, are used to protect visual designs in products. Trademarks are used to protect brands, images or slogans that are used for commercial purposes. Copyright is used to protect creative works.

What is patentable?Patentable inventions include new and useful products, machines, processes, and compositions. You can also patent new and useful improvements to patentable inventions.

What are the different types of patents I can obtain? In Canada, you can only obtain a single type of patent protection for new and useful inventions, as described above. This may be contrasted to the United States, where patents are separated into two categories: design patents, corresponding to Canadian industrial designs, and utility patents, corresponding to in Canadian patents. Please see our industrial design page or our Industrial Design FAQ for further information about industrial designs and design patents.

What is the difference between licensing and assigning a patent?Licensing a patent means granting permission to another individual or organization to make and/or sell the invention that has been patented, similar to granting someone the right to use a piece of land. Assigning a patent transfers. A patent assignment is a complete transfer of patent rights from one person to another (for example, as an inheritance after the original patent owner's death), similar to selling a piece of land.

What are the requirements for an invention to be patentable?
Typically, the most important requirements are that the invention be new and non-obvious. To be new, the invention must not have been publicly disclosed. The test of non-obviousness involves considering whether the invention is something that a skilled worker in the field or industry of the invention would consider obvious. Novelty and non-obviousness are generally judged in light of prior art.

If you need help determining whether your invention is patentable, we offer both patentability assessments to give you our opinion on patentability, as well as novelty searches designed only to uncover relevant prior art for you to review. Please contact us for a complimentary and confidential initial telephone appointment to learn more.

What is prior art?Broadly speaking, prior art is information that has been publicly disclosed before the priority date of the application.

In some countries, such as Canada and the United States, a one-year grace period may also apply. Generally, a grace period means that any information publicly disclosed by the inventor up to one year before the filing date of an application is not prior art that can be used by the patent office to argue that the invention is not new or non-obvious. Where a third party receives information about the invention from the inventor and discloses that information other than in a patent application, the grace period may also apply to that disclosure.

What is the priority date?The priority date of an application is generally the date on which the application was filed, and as such is also the filing date. However, many applications cover technology which was previously disclosed by the same inventor or applicant in an earlier application, such as in an application in another country. Where the technology was previously disclosed, an applicant may be able to claim priority to the earlier application; in which case the priority date of the later-filed application may be the filing date of the earlier application.

In most cases an earlier priority date is preferred, as it may limit the patent office’s ability to reject an application on the basis of prior art.

What if my idea is old but no one has ever patented it?
If an invention has been disclosed publicly it may no longer qualify as new, as required by the patent office. If the public disclosure was by the inventor, a one-year grace period may apply in some countries, such as the United States and Canada.

However, if your invention is simply an idea that you have been conceptualizing for a long time but which is not known publicly, it may still be eligible for patent protection.

What if my idea was patented but the filing expired?Patents are generally granted for a period of 20 years from the date of filing. Once a patent expires, it no longer limits the public’s use of the invention. Since the invention was disclosed in the now-expired patent, it was publicly disclosed and would no longer qualify as new.

However, inventive improvements to the original invention may still be eligible for patent protection.

How are patent rights enforced?Patents are generally private property enforced by the owner of the patent through the courts. If you discover someone using or selling your invention you may choose to start a lawsuit. Such a lawsuit will generally seek monetary compensation from the other party and a court order that the other party stop infringing your patent.

Who decides if patents are granted or not?The granting of patents is generally handled at the national level by a national patent office. In Canada it is handled by the Canadian Intellectual Property Office (CIPO). International treaties exist which allow patent applications to be filed initially at an international level, often with at least a first step of official consideration of the merits of the application. However, at some point you will have to decide in which countries you are interested in seeking a patent, this is generally known as a ‘national phase entry’ of an international application

Can I obtain a patent but keep my invention confidential? Generally, patent applications are made public 18 months after the filing of the application, and almost always before the application is granted. Public disclosure is an integral part of the patent system, and often described as the inventor’s side of the patent deal; exchanging public disclosure of an invention for a time-limited monopoly.

Can I patent an iPhone app, Android app, or another mobile app?Any invention is patentable provided it meets the requirements set by law, such as requirements for novelty, non-obviousness, usefulness, and patentable subject matter. Mobile apps and software, are patentable as long as they meet these requirements, and are often patented as processes or in connection with a machine such as a mobile device.

Pre-filing

When should you apply for a patent?
Generally as soon as possible, particularly in rapidly-developing areas of technology where an invention may be discovered and disclosed by others. The priority date of an application is typically based on the filing date of the application, and is the date at which subsequent public disclosures cannot be used by a patent office to argue that an invention is obvious or anticipated.

Additionally, patents are granted in Canada, as well as other countries, on a first-to-file basis. Practically speaking, this means that where two inventors independently invent the same thing, the first one to file an application is the one to whom a patent may be granted. If the second inventor then files an application, the first inventor’s application will count as a public disclosure of information and may be used by the patent office to argue that the invention is obvious or anticipated.

How long does the application process take?The time for a patent application varies, but generally takes between two and three years in Canada and the United States if you proceed expediently. Many patent offices, including the Canadian Intellectual Property Office, offer options to accelerate applications in certain circumstances.

What are the steps to patent filing?Generally, once you have come up with an invention, the first step is to find out whether that invention has been publicly disclosed by someone else. This typically involves a search of public disclosures of technology similar to your invention, such as by searching published patent applications. Practically speaking, if you keep up to date on public disclosures relating to the field of your invention, this may be as simple as considering what you have seen and reviewing recent publications.

Once you are familiar with what else exists in the field (often called the state of the art), the next step is to prepare a patent application. While there are several formal requirements, the most important sections of a patent application are generally the detailed description of embodiments and aspects of the invention, the figures corresponding to the detailed description, and the claims setting out what the patent protects.

The next step is to file your application and request examination of your application. Once examination has been requested, the patent office does a search of prior public disclosures and reviews your application to ensure it meets technical requirements. The patent office will then either approves or objects to the application. Typically, if the patent office rejects your application you are then provided with an opportunity to respond. If the patent office is satisfied with the application, the office will grant the application and issue a patent.

What are the costs of patent protection?Costs associated with an application generally include patent office fees and the fees of a patent agent. The largest cost is typically to initially prepare and file a patent application and then additional costs are incurred several months after the filing to respond to patent office objections. The cost to prepare a patent application can often be broken in two by starting with an initial provisional patent application that is filed in the United States. This can be done without losing the ability to later proceed to a regular application in Canada or anywhere else.

What is a preliminary patent search and how is it conducted?A preliminary patent search is a search of public disclosures. Such a search typically focuses on patents and patent applications as these documents provide detailed descriptions of how an invention is made or used, while other documents such as news reports may only vaguely convey details. These searches are often conducted before an application is filed to allow the application to be drafted with a focus on features which were not found during the patent search.

Can I conduct a patent search myself?Practically speaking, if you keep up to date on public disclosures relating to the field of your invention, a patent search may be as simple as considering what you have seen and reviewing recent publications. As patent searches are generally keyword searches of patent databases, the extent of the search often depends on how certain you wish to be with was has been disclosed in the field.

While a professionally-conducted search an opinion may be desired in some circumstances, in other circumstances it is quite appropriate to rely on your own familiarity with the field or a combination of your own familiarity and a brief keyword search of public databases such as Google Patents.

What does "patent pending" mean?Patent pending is a mark placed on products to inform the public that a patent application has been filed to protect the product. It is intended to dissuade others from copying the product, and often also used to indicate to the public that the product is inventive or new.

What might prevent a patent application from being granted?A patent office rejection may be based on prior art which renders your invention obvious or anticipated. A patent office rejection may also be based on technical mistakes, such as incorrectly filing the application or failing to include required material. Often the patent office will provide an applicant with an opportunity to respond to a rejection by amending the application or arguing that a piece of prior art was incorrectly interpreted. However, in some cases technical mistakes may greatly reduce potential patent protection, particularly as an applicant is generally not permitted to add subject matter to an application where the application includes only an incomplete disclosure.

May I tell others about my invention?One of the requirements for patentability is novelty, or not having your invention be publicly known prior to a patent application being filed. While a grace period may apply in Canada and the United States to permit an applicant to file an application up to a year after a public disclosure, relying on this grace period is often risky. It is often best to keep information confidential, such as by asking anyone you need to discuss your invention with to sign a non-disclosure agreement.

What is a Non-Disclosure Agreement and why do I need one?A non-disclosure agreement, or NDA, is a contract in which one or more parties agree to keep specified information or disclosures private. Broadly speaking, a NDA is evidence that a discussion of an invention between parties was not a public disclosure of the invention.

We prepare non-disclosure agreements which are suitable for use in disclosing your invention to third parties for the purpose of exploring a business relationship. Contact us if you are interested in having us prepare a reliable NDA that you can use to disclose your invention to others.

What is a provisional patent application?A provisional patent application is a type of patent application that can be filed in the United States which is not examined by the patent office. A provisional application is often used as a way to obtain a priority date, to which a later regular application may be able to claim priority to effectively secure an earlier filing date for the regular application.

Provisional applications are particularly useful when you are still developing your invention. As a regular application can typically claim priority to a provisional if filed within a year of the provisional, the provisional permits you to work on your invention for a year before deciding if you wish to move ahead with the invention as described in the provisional. From a business perspective, a provisional application is typically much cheaper to draft and file than a regular application and often gives you a year in which to decide whether you are prepared to incur the costs of a regular application. A provisional application also permits you to use the mark patent pending with your invention commercially.

Canada does not offer the option of filing a provisional application, however a similar result can be achieved by filing an initial Canadian application comparable to what would be filed as a U.S. provisional and then later filing a second Canadian application claiming internal priority to the first application. Canadian applications are not examined until examination is requested, so like the American provisional patent application many of the costs of a patent can be deferred for a time while you decide if you wish to proceed.

When would I file multiple provisional applications for a single invention?A provisional application is generally filed to secure a priority date when an applicant anticipates filing a regular application. However, a provisional applications filing date can only be used as a priority date for content disclosed in the provisional. If you have filed a provisional application and then significantly change your invention but are not yet ready to file a regular application, it is often best to file a second or subsequent provisional to secure a priority date for the changes you have made. Generally, when you are ready to file a regular application, you can claim priority back to the two or more provisional applications provided you have not waited more than one year from the filing date of the earliest provisional. >

Can I still apply for a patent after I have published my research filings?Unfortunately, publishing your findings in a trade journal or any other form of mass publication, whether industry-specific or mainstream, violates the novelty requirement of patentability and counts as a disclosure.

However, in the United States and Canada (and a few other jurisdictions), a one-year grace period may apply. Provided certain conditions are met, the one-year grace period gives you one year in which to file an application for an invention you disclosed. Note, however, that there are risks in relying on the one-year grace period, it is generally best to apply for a patent before making a public disclosure and as soon as possible after a public disclosure.

Can I establish a priority date or proof of date of invention by sending a letter to myself?No. This method, sometimes referred to as the poor man's patent, will not hold up in the face of a public disclosure. Moreover, patent systems around the world now grant patents on a first-to-file rather than first-to-invent basis.

What kind of services does a patent agent offer to their clients?A patent agent is able to assist you in understanding and complying with the requirements of the patent system, and handles all correspondence with the patent office to ensure that formal requirements are met.

An experienced patent agent can assist in drafting a patent as broadly as possible, to help ensure that you maximize the protection and value an eventual patent can provide. An experienced patent agent will also be able to help frame your responses to objections raised by the patent office, and can help in ensuring rights are not lost through failure to meet technical requirements.

Why are laboratory notebooks important?Laboratory notebooks and other evidence of the invention process can be used to show who invented what, and when. This may be important evidence if anyone seeks to contest your ownership or inventorship, or if anyone seeks to pass off your invention as their own.

Filing Process

What's in a patent application?A patent application generally includes an abstract, a summary of the invention, a detailed description of embodiments of the invention, drawings and a description of the drawings, and a set of claims.

How can I help my patent agent?
Generally the best thing you can do to held is to provide as much information to your agent as possible. In particular, the following information should be provided if available:

The field of the invention

A broad description of the invention

Objectives of the invention (that is, its main practical advantages over existing practices or products)

The preferred practice (that is, the most appropriate use) of your invention, with details of at least one practical application

Features of the invention that are new and distinct from what has come before, whether these features are patented or not

The scope of the invention—for example, the materials, compositions, conditions, etc. used to obtain good results

The invention's limitations—for example, if good results can be obtained throughout the given range of the invention, or if there are exceptions

The results of laboratory or commercial tests showing your patent's preferred practice (item 4, above) and the conditions under which poor or dangerous results could be expected

Lists of relevant patents or technical articles you have already found in any literature search, including full details such as: name of the inventor, number of the patent, country and date of issue or name of the periodical and its date with a list of the similarities and differences of practices or products that are relevant to your invention

Any disclosure you have made (for example, people you may have told about your invention)

Your name, address and citizenship

All countries in which you would like to file for a patent

Is a prototype required to file a patent application?No, a prototype is not required to file a patent application. However, as a description of the invention which enables a person of skill in the field of the invention is required, you will need to have developed your invention to the point where you are able to provide such an ‘enabling’ description.

Why do I need to indicate who the inventor is?Patent rights are granted to the inventor or inventors. Where a patent owned by a corporation, for example where the inventor was hired by the corporation to invent, the inventor will then transfer the patent rights to the corporation, typically through a formal assignment.

What is examination and what happens during an examination of a patent application?Examination of a patent application means the process of review conducted by the patent office. The patent office reviews the application to ensure formality requirements are met, and to ensure patentability requirements such as novelty, usefulness and non-obviousness are met.

In Canada examination does not begin until the applicant requests it, which must be done within five years of the filing date. However, in the United States examination is automatic.

Can my application be accelerated?Yes, there are various mechanisms available for accelerating examination of a patent application. These include requesting accelerated examination and paying the requisite fee, requesting expedited examination under the Patent Prosecution Highway (PPH) on the basis of allowed claims in a corresponding application in another jurisdiction, or the accelerated examination available for green technologies.

Who owns the patent?Patent rights are granted by default to the inventors, and are owned by the inventors in the absence of an employment relationship or assignment transferring the rights. If there are multiple inventors listed, the patent will be jointly owned.

What should I do if my patent application is rejected?An initial rejection is not uncommon. This rejection typically takes the form of a letter setting out why the patent office finds fault with your application, and providing you with a chance to respond with arguments or amendments.

As applicants typically seek the broadest patent protection possible, it is quite common for an application to undergo at least one rejection as the applicant and the patent office negotiate as to how much protection the patent office is prepared to give.

What should I do if the Patent Office issues a final rejection?If your application is rejected by the patent examiner, you may appeal the rejection to the Commissioner of Patents. This review will be conducted by the Patent Appeal Board, a special committee of senior patent officials. You may appear before the board if you wish to make a case. If your application is also rejected as the result of this appeal, you may appeal to the Federal Court.

Will the government help enforce my patent?The government does not typically get involved in enforcing privately held patent rights, unless an owner or other interested party has obtained a court order. While the government often does take limited action to protect other types of private rights, such as by arresting people when they trespass on private land, the purpose of patent rights is usually commercial rather than personal. As a result, the government leaves enforcement up to the owner or other interested parties, who may seek compensation for losses and may also seek court orders limiting the actions of infringers.

Opposing Patents

How do I keep track of competitors' patents?Most patent offices maintain a publicly accessible database of granted patents and published patent applications. Periodic searches of these databases, such as keyword searches for competitor names and relevant technology, can help you keep track of developments.

How can I oppose a competitor's patent application?Before a patent application is granted, third parties may submit prior art that they do not want the patent office to miss, such as particularly relevant published patent applications which may render the subject matter of the application obvious.

You may also send the patent office arguments or reasons why you think the application may be invalid, such as arguing that the invention disclosed in the application is inoperable or that an amendment to the application by your competitor is an improper amendment.

How do I object to a competitor's patent after issuance?Once a patent has issued, any person may request re-examination of the claims by filing prior art and a summary of how the art is relevant. The patent office will then review the request to decide if the arguments and prior art raise enough of a question of patentability to justify a re-examination.

What is a validity opinion?A validity opinion is a legal assessment of the claims of a patent and the likelihood that a patent or a particular patent claim will be invalidated in light of evidence suggesting obviousness or other issues.

A validity opinion can help you to determine whether your competitor’s patent is likely to be enforceable against you, or whether your patent is likely to be enforceable against others.

Can a competitor make small changes to my invention and avoid my patent?This often depends on the quality of the patent and the nature of the changes. The protection afforded by a patent is defined by the claims. Where the nature of the changes takes your competitor’s action outside the protection defined by the claims, it may be that your patent is no longer infringed. This is largely a case-by-case assessment.

Am I free to do something as long as it is described in my patent?Not necessarily. A patent is a negative right, allowing the owner of the patent to exclude others from the claimed invention. A patent does not give the right to use the invention. Where a patented invention is an improvement that adds something to an earlier patented invention, using the new patented invention may involve infringing the patent for the earlier patented invention.

For example, where there is a patent claiming a stool with at least three legs, a further patent may be available if someone subsequently invents a four-legged stool with an inventive stability mechanism. However, a patent for a four-legged stool does not give the owner the right to produce a four-legged stool without the permission of the owner of the patent for a stool having at least three legs, since a four-legged stool also includes at least three legs. The patent for a stool with four legs and an inventive stability mechanism can only be used to stop other people from producing a stool with four legs and the inventive stability mechanism.

Is there patent insurance that can help me pay for litigation?Yes, there are companies with which you can obtain insurance for your patent in cases of patent infringement which may help minimize the costs of litigation, and, if applicable, the damages that have to be paid out.

Can I create derivative works using an item that is already patented?Yes. In fact, most patents that are granted worldwide right now are for improvements or modifications on already existing items. However, you may need to get the permission of the owners of patent rights in the original product, such as by way of a licensing agreement.

Patents and Business

How are patents relevant to my business?
Patents are commonly filed for improvements on existing inventions. These patents give their owners a chance to make and sell the improved invention without competition.

Patents are also often relevant as a defensive mechanism. If you are producing a complex product, such as a complex piece of machinery or software, it is likely that there are patents covering various parts in the complex product and that these patents are held by various parties. Patents can help your business focus on the innovative aspect of producing new inventions, rather than figuring out how your invention will compete in the market if other companies begin scaling it.

What happens if I don't patent my invention?Depending on the nature of your invention, you may be able to preserve it as a trade secret. However, if you do not patent your invention you generally do not have a legal right to stop others from using it if they are able, and you are also not in a position to transfer legal rights to the invention in the form of a sale of the patent.

Can I sell my patent?Yes. You can license your patent to allow another individual or company to make or sell your patented invention, or transfer your patent rights completely to another individual or company.

Can I discuss details of my application with a potential investor before filing the patent?Yes. However, if your discussion would constitute an enabling disclosure, such as by discussing details of how you make or use your invention, it is usually best to have your investor to sign a non-disclosure agreement.

We prepare non-disclosure agreements which are suitable for use in disclosing your invention to investors for the purpose of exploring a business relationship. Contact us if you are interested in having us prepare a reliable NDA that you can use to disclose your invention to investors and others.

Can I apply for a patent for something I have already started selling?Yes. Where a sale would constitute a public disclosure of the invention, the one-year grace period in Canada and the United States may apply to permit you to file an application within one year of the sale. Note, however, that there are risks in relying on the one-year grace period, it is generally best to apply for a patent before making a public disclosure and as soon as possible after a public disclosure.

How do I maintain my patent?In order to maintain your patent application or patent, you have to pay regular maintenance fees to the Canadian Intellectual Property Office. They are paid annually, beginning on the second anniversary year from when your patent application was filed, up to the 19th anniversary after the filing date. If you do not pay the maintenance fees, your patent application or patent will be abandoned or will lapse. The quantum of maintenance fees to be paid increase on the 5th, 10th and 15th anniversary of when the patent has been granted. You can find the full schedule of maintenance fees here.

In the United States, maintenance fees are only payable on issued patents, at 3.5, 7.5 and 11.5 years after the date of grant of the U.S. patent.

How do I use my patent? Where do I find advice and funding support?Creating a business plan for your patent is largely a case-by-case situation that depends on the nature of your invention, whether you intend to produce and sell it yourself or license it to another company, and the general market demand for your patented invention among other factors. You can browse our resources section for general strategic information and a list of available grants and awards for prospective and current patent holders, but are encouraged to contact a lawyer for strategic advice tailored to your particular circumstances.

What does publication of patent applications entail?Generally, all applications are published in their patent office's patent eighteen months after their priority or filing date. This publication is intended to provide notice to the public of the application or patent, to discourage infringement and enable third parties to weigh in on the application process in some circumstances.

How does a licence work? A licence is an agreement between an owner of rights and an individual or corporate licensee, giving the licensee permission to use licensed rights. You may wish to enter into a licencing agreement as a way to capitalize on your patent rights, such as where you do not wish to be involved in marketing and sales or where you do not have the capacity to make your invention yourself. Licences can also enable you to open up a new channel of distribution, including opening up markets in other geographical areas where you do not operate. Drafting and executing licensing agreements is generally done on a case-by-case basis between two parties through a process of negotiation.

When can I say "patent pending" in my promotional materials?You can say "patent pending" once you have filed either a provisional or a or a regular patent application in the jurisdiction in which you are distributing these promotional materials.

Can I get a tax break by donating my patent?As your patent qualifies as personal property, it can often be donated for a tax break corresponding to the market value of the patent.

My employee has invented a new product or process. Who will get the rights to the patent?By default, if an employee comes up with and develops an invention the patent rights may belong to the employee. An invention developed by an employee only belongs to the employer if the employee was hired to invent, where hired to invent is determined on the basis of a number of factors including whether an employment agreement indicates that the employee was hired to invent, or more definitively, is required to assign ownership of inventions to the employer.

We provide consultations to review existing agreements and to provide an opinion on the ownership of inventions in these circumstances. Where there is some doubt that the employer owns the invention, we work with them to develop a strategy to gain full ownership. Contact us if you would to discuss how we can help.

Are there alternatives to protecting my invention?In some circumstances an invention may be better protected by secrecy than by patent protection. Where the invention is not something that a buyer or user can reverse engineer from your product and where it is unlikely that a competitor will be able to independently design your product, you may wish to protect your invention as a trade secret rather than limiting yourself to the 20-year protection of a patent.

Similarities and Differences Across Jurisdictions

How long does a patent last in Canada and the U.S.A.?Generally, Canadian and American patents are valid for 20 years from the filing date.

Is a patent valid in every country?Most countries handle patent applications at a national level. As a result most patents are only valid and in force in the country in which it is issued.

Can I get an international or worldwide patent?As a result of international treaties, patent applications can be filed at an international level (i.e. a Patent Cooperation Treaty or PCT patent application). However, the international authorities do not grant patents, at some point you will need to enter the application into the national stage and use the international application as the basis for national applications. The benefit of the international application stage is that it may allow you to wait until a later point before deciding in which countries you are interested in seeking a patent.

Can you get a patent in a jurisdiction of which you are not a citizen or resident?Yes, you can file in any jurisdiction regardless of citizenship or residency status.

When do I need to file my foreign applications?If you wish to take advantage of a particular priority date assigned to an early patent application, you will generally need to file your foreign applications within twelve months of your initial filing.

What is the Paris Convention?The Paris Convention for the Protection of Industrial Property is a global agreement regarding patent protection. Canada, and approximately 170 other states, are signatories. One of the main effects is a recognition between countries of priority dates established by applications filed in other signatory countries.

What role does WIPO play in regard to patents?WIPO, or the World Intellectual Property Organization, is not a patent office. Instead, WIPO is a policy body and an agency of the United Nations aiming to promote the protection of intellectual property and administer treaty cooperation.